Intellectual Property Rights Violations:
Federal Civil Remedies and Criminal
Penalties Related to Copyrights, Trademarks,
and Patents
Brian T. Yeh
Legislative Attorney
December 13, 2012
Congressional Research Service
7-5700
www.crs.gov
RL34109
CRS Report for Congress
Pr
epared for Members and Committees of Congress

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Intellectual Property Rights Violations

Summary
This report provides information describing the federal civil remedies and criminal penalties that
may be available as a consequence of violations of the federal intellectual property laws: the
Copyright Act of 1976, the Patent Act of 1952, and the Trademark Act of 1946 (conventionally
known as the Lanham Act). The report explains the remedies and penalties for the following
intellectual property offenses:
• 17 U.S.C. § 501 (copyright infringement);
• 17 U.S.C. § 506(a)(1)(A) and 18 U.S.C. § 2319(b) (criminal copyright
infringement for profit);
• 17 U.S.C. § 506(1)(B) and 18 U.S.C. § 2319(c) (criminal copyright infringement
without a profit motive);
• 17 U.S.C. § 506(a)(1)(c) and 18 U.S.C. § 2319(d) (pre-release distribution of a
copyrighted work over a computer network);
• 17 U.S.C. § 1309 (infringement of a vessel hull or deck design);
• 17 U.S.C. § 1326 (falsely marking an unprotected vessel hull or deck design with
a protected design notice);
• 17 U.S.C. §§ 1203, 1204 (circumvention of copyright protection);
• 18 U.S.C. § 2319A (bootleg recordings of live musical performances);
• 18 U.S.C. § 2319B (unauthorized recording of motion pictures in movie
theaters);
• 15 U.S.C. § 1114(1) (unauthorized use in commerce of a reproduction,
counterfeit, or colorable imitation of a federally registered trademark);
• 15 U.S.C. § 1125(a) (trademark infringement due to false designation, origin, or
sponsorship);
• 15 U.S.C. § 1125(c) (dilution of famous trademarks);
• 15 U.S.C. §§ 1125(d) and 1129 (cybersquatting and cyberpiracy in connection
with Internet domain names);
• 18 U.S.C. § 2318 (counterfeit/illicit labels and counterfeit documentation and
packaging for copyrighted works);
• 35 U.S.C. § 271 (patent infringement);
• 35 U.S.C. § 289 (infringement of a design patent);
• 35 U.S.C. § 292 (false marking of patent-related information in connection with
articles sold to the public);
• 28 U.S.C. § 1498 (unauthorized use of a patented invention by or for the United
States, or copyright infringement by the United States);
• 19 U.S.C. § 1337 (unfair practices in import trade);
• 18 U.S.C. § 2320 (trafficking in counterfeit trademarks);
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Intellectual Property Rights Violations

• 19 U.S.C. § 1526(e), 15 U.S.C. § 1124 (importing merchandise bearing
counterfeit marks),18 U.S.C. § 2320(h) (transshipment and exportation of
counterfeit goods);
• 18 U.S.C. § 1831 (trade secret theft to benefit a foreign entity); and
• 18 U.S.C. § 1832 (theft of trade secrets for commercial advantage).

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Intellectual Property Rights Violations

Contents
Introduction ...................................................................................................................................... 1
Civil Remedies ................................................................................................................................. 5
Copyright ................................................................................................................................... 5
Trademark .................................................................................................................................. 8
Patent ....................................................................................................................................... 11
Unfair Competition .................................................................................................................. 13
Trade Secrets ........................................................................................................................... 13
Criminal Penalties .......................................................................................................................... 14
Copyright ................................................................................................................................. 14
Trademark ................................................................................................................................ 17
Trade Secrets ........................................................................................................................... 18

Contacts
Author Contact Information........................................................................................................... 19

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Intellectual Property Rights Violations

his report summarizes the federal civil remedies and criminal penalties that may be
available for violations of the rights granted by the federal intellectual property laws: the
TCopyright Act of 1976, the Patent Act of 1952, and the Trademark Act of 1946
(conventionally known as the Lanham Act).1
Introduction
Intellectual property (IP) law has three major branches, applicable to different types of subject
matter: copyright (original artistic and literary works of authorship), patent (inventions of
processes, machines, manufactures, and compositions of matter that are useful, new, and
nonobvious), and trademark (commercial symbols). The source of federal copyright and patent
law originates with the Copyright and Patent Clause of the U.S. Constitution, which authorizes
Congress “To promote the Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”2 By
contrast, the constitutional basis for federal trademark law is the Commerce Clause.3
The Copyright Act, Patent Act, and Lanham Act provide legal protection for intellectual property
against unauthorized use, theft, and other violations of the rights granted by those statutes to the
IP owner. The Copyright Act provides copyright owners with the exclusive right to control
reproduction, distribution, public performance, and display of their copyrighted works.4 The
Patent Act grants patent holders the right to exclude others from making, using, offering for sale,
or selling their patented invention throughout the United States, or importing the invention into
the United States.5 The Lanham Act allows sellers and producers of goods and services to prevent
a competitor from:
(1) using any counterfeit, copy, or imitation of their trademarks (that have been registered
with the U.S. Patent and Trademark Office), in connection with the sale of any goods or
services in a way that is likely to cause confusion, mistake, or deception,6 or
(2) using in commercial advertising any word, term, name, symbol, or device, or any false or
misleading designation of origin or false or misleading description or representation of fact,

1 Unlike copyright and patent law, trademark rights and remedies for trademark infringement may arise from both
federal and state law. Although this report focuses exclusively on federal trademark law, state common law may
provide another source of legal protection for trademark owners.
2 U.S. CONST. art. I, § 8, cl. 8.
3 U.S. CONST. art. I, § 8, cl. 3. In the Trade-Mark Cases, 100 U.S. 82, 93-94 (1879), the U.S. Supreme Court held the
first federal trademark act to be unconstitutional because it was enacted pursuant to the Copyright and Patent clause:
“Any attempt ... to identify the essential characteristics of a trade-mark with inventions and discoveries in the arts and
sciences, or with the writings of authors, will show that the effort is surrounded with insurmountable difficulties.”
Subsequent federal trademark laws avoided this problem because they were adopted pursuant to Congress’s power to
regulate interstate commerce, foreign commerce, and commerce with the Indian Tribes.
4 17 U.S.C. § 106.
5 35 U.S.C. §§ 154(a)(1), 271(a). However, there is no statutory requirement that a patentee must practice the invention;
the patentee is free to license to others the right to make, use, or sell the invention. Rite-Hite Corp. v. Kelley Co., Inc.,
56 F.3d 1538, 1547 (Fed. Cir. 1995). Nor does the grant of a patent give a patent holder an affirmative right to use the
invention, as compliance with other laws may be required before such activity. For example, if a company obtains a
patent on a drug compound, it must still seek the approval of the U.S. Food and Drug Administration in order to market
the drug to consumers.
6 15 U.S.C. § 1114(1).
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which: (a) is likely to cause confusion, mistake, or deception as to affiliation, connection, or
association, or as to origin, sponsorship, or approval, of his or her goods, services, or
commercial activities by another person, or (b) misrepresents the nature, characteristics,
qualities, or geographic origin of his or her or another person’s goods, services, or
commercial activities.7
In addition, the Lanham Act grants to owners of “famous” trademarks the right to seek injunctive
relief against another person’s use in commerce of a mark or trade name if such use causes
dilution by blurring or tarnishment of the distinctive quality of the famous trademark.8
An alternative to patent law protection may be found in trade secret law, which protects trade
secrets9 from theft and espionage.10 The federal Economic Espionage Act of 199611 provides
criminal penalties for the theft or misappropriation12 of trade secrets in certain circumstances, by
domestic and foreign entities.
Enforcement of IP rights may be accomplished by the IP owner bringing a lawsuit against an
alleged infringer. The U.S. Department of Justice may also criminally prosecute particularly
egregious violators of the IP laws in order to impose greater punishment and possibly deter other
would-be violators.13 In certain circumstances, a variety of federal agencies may become involved
in IP rights enforcement:14 for example, the U.S. Customs and Border Protection agency has the
power to seize counterfeit goods upon their attempted importation in the United States; the
International Trade Commission may investigate and adjudicate allegations of unfair trade
practices due to the importing of goods that infringe U.S. patents, trademarks, or copyrights; and
the U.S. Trade Representative, the U.S. Department of Commerce’s International Trade

7 15 U.S.C. § 1125(a)(1).
8 15 U.S.C. § 1125(c)(1). For more information about trademark dilution, see CRS Report RL33393, Protecting
Famous, Distinctive Marks: The Trademark Dilution Revision Act of 2006, by Brian T. Yeh.
9 A “trade secret” means all forms and types of financial, business, scientific, technical, economic, or engineering
information, including patterns, plans, compilations, program devices, formulas, designs, prototypes, methods,
techniques, processes, procedures, programs, or codes, whether tangible or intangible, and whether or how stored,
compiled, or memorialized physically, electronically, graphically, photographically, or in writing if: (A) the owner
thereof has taken reasonable measures to keep such information secret; and (B) the information derives independent
economic value, actual or potential, from not being generally known to, and not being readily ascertainable through
proper means by, the public. 18 U.S.C. § 1839(3).
10 Until 1996, trade secret protection was primarily governed by state law. The Uniform Trade Secrets Act (UTSA) was
published in 1979 by the National Conference of Commissioners on Uniform State Laws and codifies the common law
concerning trade secrets. The UTSA has been adopted by 40 states and the District of Columbia. For a list of the states
that have adopted the UTSA, see http://www.nccusl.org/nccusl/uniformact_factsheets/uniformacts-fs-utsa.asp.
11 P.L. 104-294, §§ 1831-1839, 110 Stat. 3488 (codified at 18 U.S.C. §§ 1831-1839).
12 “Misappropriation” of a trade secret means an acquisition, disclosure, or use of a trade secret by “improper means.”
UNIFORM TRADE SECRETS ACT § 1(2). “Improper means” is a term that “includes theft, bribery, misrepresentation,
breach or inducement of a breach of a duty to maintain secrecy, or espionage through electronic or other means.” Id. §
1(1).
13 The 94 U.S. Attorneys’ Offices located across the country have primary responsibility for prosecution of IP offenses.
Every office has a Computer Hacking and Intellectual Property (“CHIP”) Coordinator, who are Assistant U.S.
Attorneys with expertise in prosecuting IP and computer crimes. U.S. DEP’T OF JUSTICE, COMPUTER CRIME &
INTELLECTUAL PROPERTY SECTION, PROSECUTING INTELLECTUAL PROPERTY CRIMES (3rd ed., Sept. 2006), available at
http://www.usdoj.gov/criminal/cybercrime/ipmanual/01ipma.html.
14 The scope of this report is limited to summarizing the penalties available under federal law for IP rights violations;
the report will not discuss in detail the various foreign, federal and state entities that may become involved in IP
enforcement and prosecution activities.
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Administration, and the U.S. State Department are all involved in promoting and seeking IP rights
enforcement by trading partners and other foreign countries.15
In copyright cases, the statute of limitations for initiating a civil action is within three years after
the claim accrued, while a criminal proceeding must be commenced within five years after the
cause of action arose.16 Although there is no express federal statute of limitations for civil
trademark infringement claims, federal courts generally follow the limitations period for the most
analogous state-law cause of action from the state in which the claim is heard; courts have also
applied the equitable doctrine of laches to determine whether a trademark infringement claim is
untimely.17 One federal appellate court has determined that criminal trademark infringement
prosecutions are governed by the general five-year statute of limitations for non-capital offenses
under Title 18 of the U.S. Code.18 Although there is no statute of limitations in patent
infringement actions, the Patent Act specifies a time limit on monetary relief for patent
infringement claims: damages are available only for infringement that occurs within the six years
prior to the filing of the complaint or counterclaim for patent infringement.19
Both the Lanham Act and the Copyright Act have criminal and civil provisions for violations of
their respective provisions,20 while the Patent Act only provides civil remedies in the event of
patent infringement.21 Federal courts determine the civil remedies in an action for infringement
brought by the IP owner.22 If the federal government chooses to prosecute individuals or
organizations for IP violations, the imprisonment terms are set forth in the substantive statutes
describing the particular IP crime, while the criminal fine amount is determined in conjunction
with 18 U.S.C. § 3571 (specifies the amount of the fine under Title 18 of the U.S. Code).
Information regarding the civil remedies and criminal penalties for violations of the copyright,
trademark, and patent laws is presented on the following pages in table-format. These penalties
may be imposed upon conviction of the defendant in the case of a criminal prosecution, and the
civil remedies follow a judgment of infringement reached by a federal judge or jury in a civil

15 The “Prioritizing Resources and Organization for Intellectual Property Act of 2008,” P.L. 110-403, created the
position of “Intellectual Property Enforcement Coordinator” (IPEC) to serve within the Executive Office of the
President, and established an interagency IP enforcement advisory committee, chaired by the IPEC and composed of
Senate-confirmed representatives of departments and agencies involved in IP enforcement, including the Office of
Management and Budget, U.S. Patent and Trademark Office, Food and Drug Administration, Copyright Office, and the
Departments of State, Homeland Security, Agriculture, and Justice. This advisory committee is charged with
developing and implementing a “joint strategic plan” to combat counterfeiting and infringement of IP rights.
16 17 U.S.C. § 507.
17 Ronald J. Nessim, Criminal (and Civil) Trademark Infringement: What Statute of Limitations Applies?, 76 J. PAT. &
TRADEMARK OFF. SOC’Y 933, 937 (Dec. 1994).
18 18 U.S.C. § 3282; see also United States v. Foote, 413 F.3d 1240, 1247 (10th Cir. 2005)(“In the case of the
Counterfeit Trademark Act, a criminal statute, Congress has provided a specific statutory period in § 3282.”).
19 35 U.S.C. § 286. However, the equitable doctrine of laches may be raised as an affirmative defense to a claim for
patent infringement if the patent holder’s delay in bringing suit is unreasonable and inexcusable, and the alleged
infringer suffers material prejudice attributable to the delay. See A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960
F.2d 1020, 1028 (Fed. Cir. 1992) (“A presumption of laches arises where a patentee delays bringing suit for more than
six years after the date the patentee knew or should have known of the alleged infringer’s activity.”).
20 For copyright, 17 U.S.C. § 501 (civil) and § 506, 18 U.S.C. § 2319 (criminal); for trademark, 15 U.S.C. § 1114
(civil) and 18 U.S.C. § 2320 (criminal).
21 35 U.S.C. § 281.
22 For copyright infringement civil actions, see 17 U.S.C. §§ 501-505; trademark infringement claims, see 15 U.S.C. §§
1114-1121; patent infringement actions, see 35 U.S.C. §§ 281-297.
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action. (Certain injunctive relief may be available prior to final judgment, such as temporary
injunctions or impounding of infringing articles.) For any offense that provides forfeiture
penalties, criminal forfeiture is available upon the conviction of the owner of the offending
property; civil forfeiture is available if the government establishes that the infringing goods are
subject to confiscation by a preponderance of the evidence.23 Restitution is available when the
defendant is convicted of a criminal property offense.24

23 For more information about forfeiture generally, see CRS Report 97-139, Crime and Forfeiture, by Charles Doyle.
24 18 U.S.C. § 2323(c) (“When a person is convicted of an offense under section 506 of title 17 or section 2318, 2319,
2319A, 2319B, or 2320, or chapter 90, of this title, the court, pursuant to sections 3556, 3663A, and 3664 of this title,
shall order the person to pay restitution to any victim of the offense as an offense against property referred to in section
3663A(c)(1)(A)(ii) of this title”). This new section of the U.S. Code was added by the “Prioritizing Resources and
Organization for Intellectual Property Act of 2008,” P.L. 110-403.
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Civil Remedies
Copyright
Cause of Action
Description of Violation
Remedies Availablea
Copyright
Violation of any of the exclusive rights of the copyright owner
(1) Injunctions, 17 U.S.C. § 502.
Infringement, 17
as provided by 17 U.S.C. §§ 106-122, 602, including the right
(2) Impounding, destruction, or other reasonable disposition of: al copies made in
U.S.C. § 501
to control reproduction, distribution, public performance, and
violation of the copyright owner’s rights; all plates, molds, matrices, masters, tapes,
display of copyrighted works.
film negatives, or other articles by means of which such copies may be reproduced;
and any records documenting the manufacture, sale, or receipt of things involved in
the violation—the court shall take such records into custody and shall enter an
appropriate protective order (with respect to discovery and use of the records) that
assures that confidential information contained in such records is not improperly
disclosed or used, 17 U.S.C. § 503.
(3) Actual damages suffered by the copyright owner due to the infringement, and
any profits of the infringer attributable to the infringement, 17 U.S.C. § 504(b).
(4) Statutory damages (at the copyright owner’s election to recover in lieu of actual
damages and profits), in the amount of not less than $750 or more than $30,000 as
the court deems just, 17 U.S.C. § 504(c)(1). For willful infringement, a court may, in
its discretion, increase the statutory damages award to a sum of not more than
$150,000, 17 U.S.C. § 504(c)(2).b
(5) Costs and attorney’s fees, 17 U.S.C. § 505.
Infringement of a
Violation of any of the rights of the owner of a vessel hull or
(1) Injunctions, 17 U.S.C. § 1322.c
Vessel Hull or Deck
deck design registered with the U.S. Copyright Office,
(2) Destruction or other disposition of all infringing articles, and any plates, molds,
Design, 17 U.S.C. §
including the right to: (1) make, have made, or import, for sale
patterns, models, or other means specially adapted for making the articles, 17 U.S.C.
1309
or for use in trade, any useful article embodying the design;
§ 1323(e).
and (2) sell or distribute any useful article with the design.
(3) Actual damages suffered by the copyright owner due to the infringement, 17
A seller/distributor who did not make or import an infringing
U.S.C. § 1323(a). The court may increase the damages to such amount, not
article is liable if he induces or acts in collusion to
exceeding $50,000 or $1 per copy, whichever is greater, as the court determines to
make/import the article. A sel er/distributor can also be liable
be just.
if a design owner asks where the article came from and the
(4) Infringer’s profits (may only be awarded as an alternative to compensatory
seller/distributor refuses to disclose its source and orders or
damages) resulting from the sale of the copies if the court finds that the infringer’s
reorders the article with the infringing design after being
sales are reasonably related to the use of the owner’s design, 17 U.S.C. § 1323(b).
notified that the design is protected.
(5) Attorney’s fees, 17 U.S.C. § 1323(d).
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Cause of Action
Description of Violation
Remedies Available
Falsely Marking an
For the purpose of deceiving the public, marking or using in
(1) A fine of not more than $500 for each such offense, 17 U.S.C. § 1326(a).
Unprotected Vessel Hull or advertising in connection with an unprotected vessel hull or
(2) Any person may sue for the penalty, in which event one-half shall go to
Deck Design with a
deck design (not registered with the U.S. Copyright Office) a
the person suing and the remainder awarded to the United States, 17
Protected Design Notice,
design notice or other words or symbols suggesting that the
U.S.C. § 1326(b).
17 U.S.C. § 1326
design is protected, knowing that the design is not so
protected.
Circumvention of
(1) 17 U.S.C. § 1201: Descrambling, decrypting, or otherwise
(1) Temporary and permanent injunctions to prevent or restrain a violation
Copyright Protection
avoiding, bypassing, removing, deactivating, or impairing a
of this offense, but in no event shall the court impose a prior restraint on
Systems in Violation of §§
technological measure, without the authority of the copyright
free speech or the press protected under the First Amendment to the
1201 and 1202 of the
owner, that effectively controls access to a copyrighted work.
Constitution.
Digital Millennium
(2) 17 U.S.C. § 1202: Manufacturing, importing, offering to the
(2) At any time while an action is pending, the court may order the
Copyright Act (DMCA),
public, providing, or otherwise trafficking in any technology,
impounding of any device or product that is in the custody or control of
17 U.S.C. § 1203
product, service, device, or component, that is primarily
the alleged violator and that the court has reasonable cause to believe was
designed or produced for the purpose of circumventing
involved in a violation.
copyright protection measures.
(3) Recovery of costs by or against any party other than the United States
or an officer thereof.
(4) Reasonable attorney’s fees to the prevailing party.
(5) The court may order the remedial modification or the destruction of
any device or product involved in the violation that is in the custody or
control of the violator or that has been impounded.
(6) Actual damages and any additional profits of the violator that are
attributable to the violation and are not taken into account in computing
the actual damages.
(7) Statutory damages (at the election of the complaining party in lieu of
actual damages), as follows:
For each violation of 17 U.S.C. § 1201, in the sum of not less than $200 or
more than $2,500 per act of circumvention, device, product, component,
offer, or performance of service, as the court considers just.
For each violation of 17 U.S.C. § 1202, in the sum of not less than $2,500
or more than $25,000.
(8) For repeated violations: If the injured party proves, and the court finds,
that a person has violated 17 U.S.C. §§ 1201 or 1202 within 3 years after a
final judgment was entered against the person for another such violation,
the court may increase the award of damages up to triple the amount that
would otherwise be awarded, as the court considers just.
(9) For innocent violations: The court in its discretion may reduce or remit
the total award of damages in any case in which the violator proves, and the
court finds, that the violator was not aware and had no reason to believe
that its acts constituted a violation.
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Cause of Action
Description of Violation
Remedies Available
Counterfeit or Illicit Labels
Knowingly trafficking in a counterfeit label or illicit label affixed
(1) Injunctions, 18 U.S.C. § 2318(e)(2)(A).
and Counterfeit
to, enclosing, or accompanying a copyrighted work, or
(2) Impounding of any article in the custody/control of the alleged violator
Documentation and
trafficking in counterfeit documentation or packaging.
that the court has reasonable cause to believe was involved in a violation of
Packaging for Copyrighted
this offense, 18 U.S.C. § 2318(e)(2)(B).
Works, 18 U.S.C. §
(3) Reasonable attorney fees and costs, 18 U.S.C. § 2318(e)(2)(C).
2318(e)(1)c
(4) Actual damages and any additional profits of the violator, 18 U.S.C. §
2318(e)(2)(C)(ii)(I).
(5) Statutory damages (at the election of the plaintiff to recover instead of
actual damages and profits), in the amount of not less than $2,500 or more
than $25,000, as the court considers appropriate, 18 U.S.C. §§
2318(e)(2)(C)(ii)(II), (f)(4).
(6) Treble damages for subsequent violations by an individual within 3 years
after a final judgment was entered against that person for a violation of this
offense, 18 U.S.C. §2318(e)(5).
Infringement of a
Infringement of a copyrighted work by the United States
The exclusive remedy is for the copyright owner to commence an action
Copyrighted Work by the
government, by a corporation owned or control ed by the
against the United States in the United States Court of Federal Claims for
United States,d 28 U.S.C. §
United States government, or by a contractor, subcontractor,
the recovery of his or her reasonable and entire compensation as damages
1498(b)
or any person, firm, or corporation acting for the United
for such infringement, including the minimum statutory damages as set forth
States and with the authorization or consent of the United
in 17 U.S.C. § 504(c). However, before the copyright owner may bring such
States government.
an action, the appropriate corporation owned or controlled by the United
States or the head of the appropriate department or agency of the
Government, as the case may be, is authorized to enter into an agreement
with the copyright owner for the damages caused by such infringement and
to settle the claim administratively out of available appropriations.
a. Throughout this report, the list of “remedies available” or “authorized penalties” describes the range of remedies and penalties that are associated with the particular
violation; whether some or all the remedies/penalties apply in any given case depends on several factors, including the court’s discretion, the plaintiff’s election of
remedy, the defendant’s conduct, and other factual circumstances of the case.
b. Where an infringer proves that he was not aware and had no reason to believe his acts constituted copyright infringement, the court may, in its discretion, reduce the
award of statutory damages to a sum of not less than $200, 17 U.S.C. § 504(c)(2).
c. While this offense also carries criminal penalties, discussed infra, the statute also provides civil remedies, permitting any copyright owner who is injured, or is
threatened with injury due to this offense, to file suit in an appropriate U.S. district court.
d. Under the Eleventh Amendment to the U.S. Constitution, a state (or instrumentality thereof) enjoys governmental immunity from lawsuits brought by private parties.
Therefore, a state that violates intellectual property rights may not be sued by the intellectual property owner unless the state consents. Congress has attempted to
abrogate the states’ sovereign immunity from patent, trademark, or copyright infringement lawsuits, by passing laws in the early 1990s that explicitly required states to
submit to suit in federal court for their intellectual property violations. However, federal courts have held these laws unconstitutional. See Florida Prepaid v. Col ege
Savings, 527 U.S. 627 (1999) (invalidating the Patent and Plant Remedy Clarification Act of 1992); Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000)
(invalidating the Copyright Remedy Clarification Act of 1990); Board of Regents of the Univ. of Wisconsin System v. Phoenix Software Int’l, Inc., 565 F.Supp.2d 1007
(W.D. Wis. 2008)(invalidating the Trademark Remedy Clarification Act of 1992).
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Trademark
Cause of Action
Description of Violation
Remedies Available
Trademark
Unauthorized use in commerce of any reproduction, copy, or
(1) Injunctions, 15 U.S.C. § 1116(a).
Infringement Due to
colorable imitatione of a federally registered mark in connection with
(2) Any damages sustained by the plaintiff, defendant’s profits, and the
Unauthorized Use of
the sale, offering for sale, distribution, or advertising of any goods or
costs of the action, 15 U.S.C. § 1117(a).
Any Reproduction,
services, where such use is likely to cause consumer confusion,
(3) In exceptional cases,f reasonable attorney fees, 15 U.S.C. § 1117(a).
Copy, or Colorable
mistake, or deception.
(4) The court may order that any infringing articles bearing the
Imitation of a Federally
reproduction, copy, or colorable imitation of a registered mark be
Registered Mark, 15
destroyed, 15 U.S.C. § 1118.
U.S.C. § 1114(1)
Trademark
Intentional use in commerce of a counterfeit mark or designationg, in
(1) Injunctions, 15 U.S.C. § 1116(a).
Infringement Due to
either of two circumstances:
(2) The court may order that any infringing articles bearing the
Use of a Counterfeit of
(1) in connection with the sale, offering for sale, or distribution of
counterfeit of the registered mark be destroyed, 15 U.S.C. § 1118.
a Federally Registered
goods or services, knowing that such mark or designation is a
(3) Seizure of goods and counterfeit marks as ordered by a court upon
Mark, 15 U.S.C. § 1114(1)
counterfeit mark, or
an ex parte application, as well as the means of making such marks, and
(2) providing goods or services necessary to the commission of the
records documenting the manufacturer, sale, or receipt of things involved
violation described in the first circumstance above, with the intent
in such violation, 15 U.S.C. § 1116(d)(1)(A).
that the recipient of the goods or services would put the goods or
(4) Unless the court finds extenuating circumstances, treble any damages
services to use in committing the violation.
sustained by the plaintiff or defendant’s profits, whichever is greater, plus
reasonable attorneys’ fees, 15 U.S.C. § 1117(b).
(5) Statutory damages (at the election of the plaintiff to recover instead
of actual damages and profits), in the amount of not less than $1,000 or
more than $200,000 per counterfeit mark per type of goods or services
sold, offered for sale, or distributed, as the court considers just, 15
U.S.C. § 1117(c)(1). If the court finds that the use of the counterfeit mark
was willful, the statutory damages award is not more than $2,000,000 per
counterfeit mark per type of goods or services sold, offered for sale, or
distributed, as the court considers just, 15 U.S.C. § 1117(c)(2).
Trademark
Use in connection with any goods or services of any word, term,
(1) Injunctions, 15 U.S.C. § 1116(a).
Infringement Due to
name, symbol, or device, or any false designation of origin, false or
(2) Any damages sustained by the plaintiff, defendant’s profits, and the
False Designation,
misleading description of fact, or false or misleading representation of costs of the action, 15 U.S.C. § 1117(a).
Origin, or Sponsorship,
fact, which:
(3) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
15 U.S.C. § 1125(a)
(A) is likely to cause confusion, mistake, or deception as to the
(4) The court may order that any infringing articles bearing the word,
affiliation, connection, or association of such person with another
term, name, symbol, or device be destroyed, 15 U.S.C. § 1118.
person, or as to the origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the
nature, characteristics, qualities, or geographic origin of his or her or
another person’s goods, services, or commercial activities.
CRS-8

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Cause of Action
Description of Violation
Remedies Available
Dilution of Famous
Use in commerce of a mark or trade name if such use causes
(1) Injunctions, 15 U.S.C. §§ 1116(a), 1125(c)(1).
Trademarks, 15 U.S.C. §
dilutionh by blurringi or tarnishmentj of the distinctive quality of a
Under 15 U.S.C. § 1125(c)(5), owners of famous marks may also be
1125(c)
famous trademark.
entitled to the fol owing additional remedies listed below if:
the mark or trade name that is likely to cause dilution by blurring or
dilution by tarnishment was first used in commerce by the alleged
infringer after Oct. 6, 2006; and
(A) in a dilution by blurring action, the person willfully intended to trade
on the recognition of the famous mark; or (B) in a dilution by
tarnishment action, the person willfully intended to harm the reputation
of the famous mark.
(2) For a willful violation, any damages sustained by the plaintiff,
defendant’s profits, and the costs of the action, 15 U.S.C. § 1117(a).
(3) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(4) For a willful violation, the court may order that any infringing articles
bearing the word, term, name, symbol, or device be destroyed, 15 U.S.C.
§ 1118.
Cyberpiracy and
Registering of, trafficking in, offering to sell, or use of an Internet
(1) Injunctions, 15 U.S.C. § 1116(a).
Cybersquatting in
domain name that is
(2) Any damages sustained by the plaintiff, defendant’s profits, and the
Connection With
(A) identical or confusingly similar to a trademark that is distinctive at costs of the action, 15 U.S.C. § 1117(a).
Internet Domain
the time the domain name is registered; or
(3) Statutory damages (at the election of the plaintiff to recover instead
Names, 15 U.S.C. §
(B) identical, confusingly similar to, or dilutive of a trademark that is
of actual damages and profits), in the amount of not less than $1,000 and
1125(d)
famous at the time the domain name is registered, with a bad faith
not more than $100,000 per domain name, as the court considers just,
intent to profit from the goodwill of another’s trademark.
15 U.S.C. § 1117(d).
(4) In exceptional cases, reasonable attorney fees, 15 U.S.C. § 1117(a).
(5) Forfeiture or cancellation of the domain name or the transfer of the
domain name to the owner of the mark, 15 U.S.C. § 1125(d)(1)(C)
If the trademark owner is not able to obtain in personam jurisdiction
over a person who would have been a defendant in this action (for
example, the domain name registrant lives in a foreign country), or is
otherwise unable through due diligence to identify the person to bring
such an action, the trademark owner may file an in rem civil action
against a domain name in the judicial district in which the domain name
registrar, domain name registry, or other domain name authority that
registered or assigned the domain name is located. In such an in rem
action, the remedies are limited to a court order for the forfeiture or
cancellation of the domain name or the transfer of the domain name to
the owner of the mark, 15 U.S.C. § 1125(d)(2).
CRS-9

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Cause of Action
Description of Violation
Remedies Available
Cyberpiracy Protection
Registering an Internet domain name, on or after November 29,
(1) Injunctive relief, including the forfeiture or cancellation of the domain
for Individuals, 15 U.S.C.
1999, that consists of the name of another living person, or a name
name or the transfer of the domain name to the plaintiff, 15 U.S.C. §
§ 1129
substantially and confusingly similar thereto, without that person’s
1129(2).
consent, with the specific intent to profit from such name by selling
(2) Costs and attorneys’ fees to the prevailing party, at the court’s
the domain name for financial gain to that person or any third party.
discretion, 15 U.S.C. § 1129(2).
Importation of
Importing goods bearing infringing marks or names that are identical
(1) Seizure by the U.S. Customs Servicel and, in the absence of the
Merchandise Bearing
with, or substantially indistinguishable from, registered marks, in
written consent of the trademark owner, forfeiture for violations of the
Counterfeit Mark,19
violation of Section 526 of the Tariff Act of 1930, and Section 42 of
customs laws.
U.S.C. § 1526(e); 15 U.S.C.
the Lanham Act.k
(2) Upon seizure of such merchandise, the Secretary of the Department
§1124
Transshipping through or exporting from the United States
of Homeland Security shall notify the owner of the trademark, and shall,
Transshipment and
counterfeit goods or services
after forfeiture, destroy the merchandise. If, however, the merchandise is
Exportation of
not unsafe or a hazard to health, and the trademark owner provides his
Counterfeit Goods and
consent to the Secretary, the Secretary may remove the trademark (if
Services, 18 U.S.C. §
feasible) and dispose of the seized goods by giving it to federal, state, and
2320(h)
local government agencies or to charitable organizations that the
Secretary believes have a need for such merchandise. If none of these
parties have established such a need, and it has been at least 90 days after
the date of forfeiture, the Customs Service may sell the merchandise at
public auction.
(3) Any person who directs, assists financially or otherwise, or aids and
abets the importation of merchandise for sale or public distribution that
is seized in violation of this offense is subject to a civil fine. For the first
seizure of such merchandise, the fine shal be not more than the
domestic value of the merchandise as if it had been genuine, according to
the manufacturer’s suggested retail price. For the second seizure and
thereafter, the fine shall be not more than twice the value that the
merchandise would have had if it were genuine. The imposition of this
fine is within the discretion of the Customs Service, and is in addition to
any other civil or criminal penalty or other remedy authorized by law, 19
U.S.C. § 1526(f).
e. The term “colorable imitation” includes any mark which so resembles a registered mark as to be likely to cause confusion or mistake or to deceive. 15 U.S.C. § 1127.
f.
Although the Lanham Act does not define what constitutes an “exceptional” case, federal courts have determined that malicious, fraudulent, deliberate, or willful
trademark infringement could qualify for this characterization. See, e.g., United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1232 (10th Cir. 2000).
g. A “counterfeit mark or designation” means: (1) a counterfeit of a mark that is registered on the principal register of the U.S. Patent and Trademark Office, or (2) a
spurious designation that is identical with, or substantially indistinguishable from, a designation relating to the United States Olympic Committee and other sports-
related symbols and names protected under 36 U.S.C. § 220506. 15 U.S.C. § 1116(d).
h. “Dilution” is statutorily defined in 15 U.S.C. § 1127 to mean “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of
the presence or absence of ... (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception.”
CRS-10

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i.
“Blurring” occurs when the famous mark’s ability to identify its product has been impaired due to an association in the minds of consumers arising from similarity
between another mark and the famous mark. 15 U.S.C. § 1125(c)(2)(B).
j.
Tarnishment occurs when the reputation of a famous mark has been harmed by negative associations arising from the similarity between another mark and the famous
mark. 15 U.S.C. § 1125(c)(2)(C). Situations in which tarnishment could result are when a famous trademark is “linked to products of shoddy quality, or is portrayed in
an unwholesome or unsavory context, with the result that the public will associate the lack of quality or lack of prestige in the defendant’s goods with the plaintiff’s
unrelated goods.” Hormel Foods Corp. v. Jim Henson Prods., 73 F.3d 497, 507 (2d Cir. 1996) (citations and internal quotations omitted).
k. Under the “personal use exemption,” 19 U.S.C. §1526(d)(1), this restriction does not apply to the importation of one article bearing a protected trademark that
accompanies any traveler arriving in the United States, when such article is for his personal use and not for sale.
l.
Pursuant to agency policy, the U.S. Customs Service prioritizes enforcement efforts on trademarks and trade names that are recorded with U.S. Customs Service. U.S.
Customs Directive No. 2310-008A (April 2000), available at http://www.cbp.gov/linkhandler/cgov/trade/legal/directives/2310-008a.ctt/2310-008a.pdf. Trademarks
registered by the U.S. Patent and Trademark Office may be recorded with U.S. Customs if the registration is current. 19 C.F.R. § 133.1.
Patent
Cause of Action
Description of Violation
Remedies Available
Patent
(a) Unauthorized making, using, or selling any patented invention within the
(1) Injunctions, 35 U.S.C. § 283.
Infringement, 35
United States or importing into the United States any patented invention
(2) Damages adequate to compensate for the infringement (including
U.S.C. §§ 271; 281-
during the patent term;
lost profits if the patent holder can demonstrate a causal connection
297.
(b) Actively inducing patent infringement;
between the infringement and the unearned profits), but in no event
(c) Selling within the United States or importing into the United States a
less than a reasonable royalty for the use of the invention by the
component of a patented invention, for use in practicing a patented process,
infringer, together with interest and costs as determined by the court,
constituting a material part of the invention, knowing it to be especial y made
35 U.S.C. § 284. The court may receive expert testimony as an aid to
for use in an infringement of such patent;
the determination of damages or of what royalty would be reasonable
(d) Manufacturing within the United States the components of a patented
under the circumstances.
invention and then exporting those disassembled parts for combination abroad (3) The court in its discretion (for example, in cases of egregious,
into an end product.
willful infringement) may increase the damages up to three times the
amount found or assessed by either the jury or the court, 35 U.S.C. §
284.
(4) In exceptional cases, the court may award reasonable attorney fees
to the prevailing party, 35 U.S.C. § 285.
NOTE: Monetary damages shall not be awarded for any infringement
committed more than 6 years prior to the filing of the complaint or
counterclaim for infringement, 35 U.S.C. § 286.
Infringement of a
Unauthorized application of a patented design (or any colorable imitation
(1) The offender is liable to the patent design owner to the extent of
Design Patent, 35 thereof) to any article of manufacture for the purpose of sale, or the sale of
his total profit, but in no event less than $250, recoverable in any U.S.
U.S.C. § 289
such article.
district court having jurisdiction of the parties.
(2) The remedies for patent infringement described in the box
immediately above may also be available to the owner of a design
patent infringed in this manner, but he is not allowed to twice recover
the profit made from the infringement, 35 U.S.C. § 289.
CRS-11

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Cause of Action
Description of Violation
Remedies Available
False Marking of
(1) Unauthorized use in connection with anything made, used, or sold within
(1) A fine of not more than $500 for every such offense, 35 U.S.C. §
Patent-related
the United States, or imported into the United States, of the name of a patent
292(a). Only the United States government may sue for this penalty.
Information in
owner, patent number, or the words “patent” or “patentee,” with the intent of (2) Any person who has suffered a competitive injury as a result of this
Connection with
counterfeiting the mark of the patentee, or of deceiving the public;
offense may file a civil action to recover damages adequate to
Articles Sold to
(2) Marking any unpatented article with the word “patent” or any word or
compensate for the injury. 35 U.S.C. § 292(b).m
the Public, 35
number, for the purpose of deceiving the public; or
U.S.C. § 292
(3) Using the words “patent applied for,” “patent pending,” or any word falsely
suggesting that a patent application has been made or is pending, for the
purpose of deceiving the public.
Unauthorized
(1) Use or manufacture of a patented invention by or for the United States
(1) An action against the United States in the United States Court of
Use or
government without the patent owner’s authorization.
Federal Claims for the recovery of the patent holder’s reasonable and
Manufacture of a
entire compensation for such use and manufacture.
Patented
(2) Reasonable and entire compensation shall include the owner’s
Invention by or
reasonable costs, including reasonable fees for expert witnesses and
for the United
attorneys, in pursuing the action if the patent owner is an independent
States,m 28 U.S.C.
inventor, a nonprofit organization, or an entity that had no more than
§ 1498(a)
500 employees at any time during the 5-year period preceding the use
or manufacture of the patented invention by or for the United States.
However, unless the action has been pending for more than 10 years
from the time of filing to the time that the owner applies for such costs
and fees, reasonable and entire compensation shall not include such
costs and fees if the court finds that the position of the United States
was substantially justified or that special circumstances make an award
unjust.
m. Prior to September 16, 2011, the Patent Act’s false marking provision allowed for so-called “qui tam” civil actions (that is, any member of the public could have sued a
false marking offender on behalf of the federal government, in which event the fine was shared evenly between the person bringing the suit and the United States). In
an effort to curb the proliferation of false patent marking suits in 2010 and 2011, the 112th Congress enacted legislation that eliminated qui tam false marking suits.
Section 16(b) of the Leahy-Smith America Invents Act, P.L. 112-29, amended the false marking offense to require that the person bringing a false marking suit must
have suffered a competitive injury as a result of the violation; the new law also limited the damages available in such a lawsuit. For more information about these
changes, see CRS Report R41418, False Patent Marking: Litigation and Legislation, by Brian T. Yeh.
n. A state (or instrumentality thereof) that infringes a patent may not be sued by the patent holder because of the Eleventh Amendment to the U.S. Constitution.
Legislation that would have abrogated the states’ sovereign immunity from patent infringement lawsuits was invalidated by the U.S. Supreme Court in the late 1990s.
See Florida Prepaid v. College Savings, 527 U.S. 627 (1999).
CRS-12

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Unfair Competition
Cause of Action
Description of Violation
Remedies Available
Unfair Practices in
Infringement by importing counterfeit and infringing products into the
(1) General or limited exclusion orders issued by the ITC barring the
Import Trade, 19
United States.
importation of infringing products into the United States (enforced by the
U.S.C. § 1337o
Section 337 of the Tariff Act of 1930 grants intel ectual property rights
U.S. Bureau of Customs and Border Protection).
holders the right to seek relief from the United States International
(2) Cease and desist orders issued by the ITC to specific U.S. persons to
Trade Commission (ITC), for the importation of goods that infringe a
prohibit the use or purchase of such infringing products from abroad
trademark, patent, or copyright. To initiate a “Section 337 action,”
(enforced by the ITC), 19 U.S.C. §§ 1337(d)-(f).
intellectual property rights owners must file a complaint with the ITC
(3) Monetary damages are not available in a Section 337 proceeding,
to allege unfair acts in the importation of infringing goods into the
although the intellectual property owner can seek such monetary relief by
United States.
filing a suit in federal district court.
(4) Civil forfeiture is authorized if the owner or importer of the infringing
article previously attempted to import the article into the United States, 19
U.S.C. § 1337(i).
(5) Anyone who violates an order of the ITC must pay to the United States
a civil penalty for each day on which an importation of articles, or their sale,
occurs in violation of the order. The amount of the civil penalty is to be not
more than the greater of $100,000 or twice the domestic value of the
articles entered or sold on such day in violation of the ITC’s order. To
recover the civil penalty, the ITC may bring a civil action in the U.S. District
Court for the District of Columbia or in the district in which the violation
occurs, 19 U.S.C. § 1337(f)(2).
o. While the majority of Section 337 cases usually involve a claim of patent infringement, the statute expressly allows trademark and copyright owners to seek relief, 19
U.S.C. § 1337(a)(1)(B)(i) (registered copyrighted work), 19 U.S.C. § 1337(a)(1)(C) (registered U.S. trademark).
Trade Secrets
Cause of Action
Description of Violation
Remedies Available
Theft of a Trade
With intent or knowledge that the offense will benefit any foreign
The Attorney General of the United States may, in a civil action brought in
Secret to Benefit a
government, foreign instrumentality, or foreign agent, knowingly: (1)
a U.S. district court, obtain appropriate injunctive relief, 18 U.S.C. § 1836.
Foreign Entity, 18
stealing or without authorization taking or obtaining a trade secret; (2)
U.S.C. § 1831
without authorization copying, destroying, or transmitting a trade
secret; (3) receiving, buying, or possessing a trade secret, knowing it to
have been stolen or obtained without authorization; (4) attempting to
commit any offense described above; (5) conspiring with one or more
other persons to commit any offense described above, and one or
more of such persons do any act to effect the object of the conspiracy.
CRS-13

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Cause of Action
Description of Violation
Remedies Available
Theft of Trade
With intent to convert a trade secret related to a product that is
The Attorney General of the United States may, in a civil action brought in a U.S.
Secrets for
placed in interstate or foreign commerce, to the economic benefit
district court, obtain appropriate injunctive relief, 18 U.S.C. § 1836.
Commercial
of anyone other than the owner thereof, and intending or knowing
Advantage, 18
that the offense will injure any owner of that trade secret,
U.S.C. § 1832
knowingly: (1) stealing, or without authorization taking or
obtaining such information; (2) without authorization copying,
destroying, or communicating a trade secret; (3) receiving, buying,
or possessing a trade secret, knowing it to have been stolen or
obtained without authorization; (4) attempting to commit any
offense described above; (5) conspiring with one or more other
persons to commit any offense described above, and one or more
of such persons do any act to effect the object of the conspiracy.
Criminal Penalties
Copyright
Criminal Law
Description of Offense
Authorized Penalties
Copyright
Willful infringement of copyright for purposes of commercial
(1) If the offense consists of the reproduction or distribution (including by electronic
Infringement for
advantage or private financial gain.
means) during any 180-day period of at least 10 copies of one or more copyrighted
Profit, 17 U.S.C. §
works, which have a total retail value of more than $2,500, an imprisonment
506(a)(1)(A), 18
sentence of not more than 5 years, or a fine in the amount of up to $250,000, or
U.S.C. § 2319(b)
both (for corporate offenders or an organization, up to a $500,000 fine is permitted),
18 U.S.C. § 2319(b)(1).
(2) If the offense is a felony and is a second or subsequent offense, the maximum
imprisonment term is doubled to 10 years, or a fine of up to $250,000 ($500,000 for
organizations), or both, 18 U.S.C. § 2319(b)(2).
(3) Anyone who commits this offense in any other case is subject to an imprisonment
sentence of not more than 1 year, or a fine of up to $100,000 ($200,000 for
organizations), or both, 18 U.S.C. § 2319(b)(3).
(4) Civil and criminal forfeiture of any article (the making or trafficking of which is
prohibited by this offense), any property used (or intended to be used) in any manner
or part to commit or facilitate the commission of this offense, and any property
derived constituting or derived from any proceeds obtained directly or indirectly as a
result of the commission of the offense, 17 U.S.C. § 506(b), 18 U.S.C. § 2323.
(5) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-14

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Criminal Law
Description of Offense
Authorized Penalties
Copyright
Willful infringement of a copyright by (1) If the offense consists of the reproduction or distribution of 10 or more copies of 1 or more copyrighted
Infringement
reproducing or distributing, including works, which have a total retail value of $2,500 or more, a statutory maximum penalty of 3 years imprisonment, or
Without Profit
by electronic means, during any 180-
a fine of up to $250,000 ($500,000 for organizations), or both, 18 U.S.C. § 2319(c)(1).
Motive, 17 U.S.C. §
day period, one or more copies of
(2) If the offense is a felony and is a second or subsequent offense, the maximum imprisonment term is 6 years, or
506(a)(1)(B), 18
one or more copyrighted works
a fine of up to $250,000 ($500,000 for organizations), or both, 18 U.S.C. § 2319(c)(2).
U.S.C. § 2319(c)
which have a total retail value of
(3) If the offense consists of the reproduction or distribution of 1 or more copies of 1 or more copyrighted works,
more than $1,000.
which have a total retail value of more than $1,000, an imprisonment sentence of not more than 1 year, or a fine
of up to $100,000 ($200,000 for organizations), or both, 18 U.S.C. § 2319(c)(3).
(4) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited by this offense), any
property used (or intended to be used) in any manner or part to commit or facilitate the commission of this
offense, and any property derived constituting or derived from any proceeds obtained directly or indirectly as a
result of the commission of the offense, 17 U.S.C. § 506(b), 18 U.S.C. § 2323.
(5) Mandatory restitution, 18 U.S.C. § 2323(c).
Pre-Release
Distributing a copyrighted work
If infringement committed for commercial purpose:
If infringement has no commercial purpose:
Distribution of a
being prepared for commercial
(1) Imprisonment of not more than 5 years, or a fine
(1) For a first offense, imprisonment of not more than 3
Copyrighted
distribution, by making it available on of up to $250,000 ($500,000 for organizations), or
years, or a fine of up to $250,000 ($500,000 for
Work Over a
a publicly-accessible computer
both, 18 U.S.C. § 2319(d)(2). If the offense is a felony organizations), or both, 18 U.S.C. § 2319(d)(1).
Publicly-
network, if the infringer knew or
and is a second or subsequent offense, the maximum
(2) If the offense is a felony and is a second or subsequent
Accessible
should have known that the work
imprisonment term is 10 years, or a fine of up to
offense, the maximum imprisonment term is 6 years, or a
Computer
was intended for commercial
$250,000 ($500,000 for organizations), or both, 18
fine of up to $250,000 ($500,000 for organizations), or
Network, 17 U.S.C. distribution.
U.S.C. § 2319(d)(4).
both, 18 U.S.C. § 2319(d)(3).
§ 506(a)(1)(C), 18
(2) Civil and criminal forfeiture of any article (the
(3) Civil and criminal forfeiture of any article (the making
U.S.C. § 2319(d)
making or trafficking of which is prohibited by this
or trafficking of which is prohibited by this offense), any
offense), any property used (or intended to be used)
property used (or intended to be used) in any manner or
in any manner or part to commit or facilitate the
part to commit or facilitate the commission of this offense,
commission of this offense, and any property derived and any property derived constituting or derived from any
constituting or derived from any proceeds obtained
proceeds obtained directly or indirectly as a result of the
directly or indirectly as a result of the commission of commission of the offense, 17 U.S.C. § 506(b), 18 U.S.C. §
the offense, 17 U.S.C. § 506(b), 18 U.S.C. § 2323.
2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-15

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Criminal Law
Description of Offense
Authorized Penalties
Circumvention of
Willfully and for purposes of commercial advantage or private
(1) For a first offense: imprisonment for not more than 5 years, or a fine of
Copyright Protection
financial gain:
not more than $500,000,p or both.
Systems in Violation of
(1) Descrambling, decrypting, or otherwise avoiding, bypassing,
(2) For the second or subsequent offense: imprisonment for not more than
the Digital Millennium
removing, deactivating, or impairing a technological measure, without 10 years, or a fine of not more than $1,000,000, or both.
Copyright Act (DMCA), the authority of the copyright owner, that effectively controls access
17 U.S.C. § 1204
to a copyrighted work; or
(2) Manufacturing, importing, offering to the public, providing, or
otherwise trafficking in any technology, product, service, device, or
component, that is primarily designed or produced for the purpose
of circumventing copyright protection measures.
Bootleg Recordings of
Knowingly and for purposes of commercial advantage or private
(1) For a first offense, imprisonment of up to 5 years, or a fine of up to
Live Musical
financial gain:
$250,000 ($500,000 for organizations), or both.
Performances, 18 U.S.C.
(1) making an unauthorized recording of sounds or sounds/images of
(2) For a second or subsequent offense, the maximum imprisonment
§ 2319A
a live musical performance, or copies of such recording; (2)
sentence doubles to 10 years (with the same fine amounts as the first
transmitting or other communication to the public of such sounds
offense).
and/or images of a live musical performance; or (3) distribution, sale,
(3) Civil and criminal forfeiture of any article (the making or trafficking of
or trafficking in any copy of an unauthorized live musical performance which is prohibited by this offense), any property used (or intended to be
recording (whether or not such recording was done in the United
used) in any manner or part to commit or facilitate the commission of this
States).
offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the
offense, 18 U.S.C. §§ 2319A(b), 2323.
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
Unauthorized
Knowingly using an audiovisual recording device to transmit or make
(1) For a first offense, imprisonment of not more than 3 years, or a fine of
Recording of Motion
a copy of a motion picture from a performance of such work in a
up to $250,000 ($500,000 for organizations).
Pictures in a Movie
movie theater.
(2) For a second or subsequent offense, the maximum imprisonment
Theater (Camcording),
sentence doubles to 6 years (with the same fine amounts as the first
18 U.S.C. § 2319B
offense).
(3) Civil and criminal forfeiture of any article (the making or trafficking of
which is prohibited by this offense), any property used (or intended to be
used) in any manner or part to commit or facilitate the commission of this
offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the
offense, 18 U.S.C. §§ 2319B(b), 2323
(4) Mandatory restitution, 18 U.S.C. § 2323(c).
CRS-16

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Criminal Law
Description of Offense
Authorized Penalties
Counterfeit or Illicit
Knowingly trafficking in a counterfeit label or
(1) Imprisonment of not more than 5 years, a fine of up to $250,000 ($500,000 for organizations),
Labels and Counterfeit
illicit label affixed to, enclosing, or
or both.
Documentation and
accompanying a copyrighted work, or
(2) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited by this
Packaging for
trafficking in counterfeit documentation or
offense), any property used (or intended to be used) in any manner or part to commit or facilitate
Copyrighted Works, 18 packaging.
the commission of this offense, and any property derived constituting or derived from any proceeds
U.S.C. § 2318
obtained directly or indirectly as a result of the commission of the offense, 18 U.S.C. §§ 2318(d),
2323.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
p. The fines listed in this box are the same for an individual or for organizations.
Trademark
Criminal Law
Description of Offense
Authorized Penalties
Trafficking in
(1) Intentional y trafficking or attempting to
(1) For a first offense, imprisonment of not more than 10 years, or a fine of not more than
Counterfeit
traffic in goods or services and knowingly
$2,000,000 ($5,000,000 for organizations), or both.
Trademarks, Service
using a counterfeit markq on or in connection
(2) For a second or subsequent offense, the maximum imprisonment term doubles to 20 years, and
Marks, and
with such goods or services;
the maximum fines increase to $5,000,000 ($15,000,000 for organizations).
Certification Marks,
(2) Intentional y trafficking or attempting to
(3) If the offender knowingly or recklessly causes or attempts to cause serious bodily injury from
18 U.S.C. § 2320
traffic in labels, patches, stickers, wrappers,
conduct in violation of this offense, imprisonment of not more than 20 years, a fine of up to
badges, emblems, medallions, charms, boxes,
$250,000 ($500,000 for organizations), or both, 18 U.S.C. § 2320(a)(2)(A).
containers, cans, cases, hangtags,
(4) If the offender knowingly or recklessly causes or attempts to cause death from conduct in
documentation, or packaging of any type or
violation of this offense, imprisonment for any term of years up to life, or a fine of up to $250,000
nature, knowing that a counterfeit mark has
($500,000 for organizations), or both, 18 U.S.C. § 2320(a)(2)(B).
been applied thereto, the use of which is
(5) Civil and criminal forfeiture of any article (the making or trafficking of which is prohibited by
likely to cause confusion, to cause mistake, or this offense), any property used (or intended to be used) in any manner or part to commit or
to deceive.
facilitate the commission of this offense, and any property derived constituting or derived from any
proceeds obtained directly or indirectly as a result of the commission of the offense, 18 U.S.C. §§
2320(b), 2323.
(6) Mandatory restitution, 18 U.S.C. §§ 2320(b), 2323(c).
q. 18 U.S.C. § 2320(e) defines “counterfeit mark” for the purposes of this offense as a spurious mark that: (1) is used in connection with trafficking in any goods, services,
labels, patches, stickers, wrappers, badges, emblems, medallions, charms, boxes, containers, cans, cases, hangtags, documentation, or packaging of any type or nature;
(2) is identical with, or substantially indistinguishable from, a mark registered on the principal register in the United States Patent and Trademark Office and in use,
whether or not the defendant knew such mark was so registered; (3) is applied to or used in connection with the goods or services for which the mark is registered
with the United States Patent and Trademark Office, or is applied to or consists of a label, patch, sticker, wrapper, badge, emblem, medal ion, charm, box, container,
can, case, hangtag, documentation, or packaging of any type or nature that is designed, marketed, or otherwise intended to be used on or in connection with the goods
or services for which the mark is registered in the United States Patent and Trademark Office; and (4) the use of which is likely to cause confusion, to cause mistake,
or to deceive.
CRS-17

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Trade Secrets
Criminal Law
Description of Offense
Authorized Penalties
Trade Secret Theft
With intent or knowledge that the offense will benefit any foreign
(1) Imprisonment of up to 15 years, or a fine of up to $500,000
to Benefit a Foreign government, foreign instrumentality, or foreign agent, knowingly: (1) stealing ($10,000,000 for organizations), or both.
Entity, 18 U.S.C. §
or without authorization taking or obtaining a trade secret; (2) without
(2) Civil and criminal forfeiture of any article (the making or trafficking
1831
authorization copying, destroying, or transmitting a trade secret; (3)
of which is prohibited by this offense), any property used (or intended
receiving, buying, or possessing a trade secret, knowing it to have been
to be used) in any manner or part to commit or facilitate the
stolen or obtained without authorization; (4) attempting to commit any
commission of this offense, and any property derived constituting or
offense described above; (5) conspiring with one or more other persons to
derived from any proceeds obtained directly or indirectly as a result of
commit any offense described above, and one or more of such persons do
the commission of the offense, 18 U.S.C. §§ 1834, 2323.
any act to effect the object of the conspiracy.
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
Theft of Trade
With intent to convert a trade secret related to a product that is placed in
(1) Imprisonment of up to 10 years, or a fine of up to $250,000
Secrets for
interstate or foreign commerce, to the economic benefit of anyone other
($5,000,000 for organizations), or both.
Commercial
than the owner thereof, and intending or knowing that the offense will
(2) Civil and criminal forfeiture of any article (the making or trafficking
Advantage, 18 U.S.C. injure any owner of that trade secret, knowingly: (1) stealing, or without
of which is prohibited by this offense), any property used (or intended
§ 1832
authorization taking or obtaining such information; (2) without authorization to be used) in any manner or part to commit or facilitate the
copying, destroying, or communicating a trade secret; (3) receiving, buying,
commission of this offense, and any property derived constituting or
or possessing a trade secret, knowing it to have been stolen or obtained
derived from any proceeds obtained directly or indirectly as a result of
without authorization; (4) attempting to commit any offense described
the commission of the offense, 18 U.S.C. §§ 1834, 2323.
above; (5) conspiring with one or more other persons to commit any
(3) Mandatory restitution, 18 U.S.C. § 2323(c).
offense described above, and one or more of such persons do any act to
effect the object of the conspiracy.

CRS-18

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Intellectual Property Rights Violations



Author Contact Information

Brian T. Yeh

Legislative Attorney
byeh@crs.loc.gov, 7-5182


Congressional Research Service
19

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